Delhi High Court - Orders
Kentucky Fried Chicken International ... vs Muhammad Ali. M And Ors on 5 September, 2024
$~33
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 718/2024 & I.A. 37410/2024
KENTUCKY FRIED CHICKEN INTERNATIONAL HOLDINGS
LLC .....Plaintiff
Through: Mr. Prithvi Singh, Ms. Devyani Nath,
Advocates (M:7042547106)
versus
MUHAMMAD ALI. M AND ORS .....Defendants
Through: Mr. Mahesh Thakur, Mr. Bhagyesh
K.P., Advocates for D-1 and 2
(M:9899459291)
Email:[email protected]
Ms. Mrinal Ojha, Mr. Debarshi Dutta,
Mr. Arjun Mookerjee, Advocates for
D-3 (M:9674388460)
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 05.09.2024
CS(COMM) 718/2024
1. Pursuant to the last order, learned counsel for the defendants has handed over a document pertaining to the new logo and mark which the defendants wishes to adopt. However, the same is not acceptable to learned counsel for the plaintiff, who submits that the mark 'AFC' is deceptively similar to the mark 'KFC'.
2. Accordingly, let the plaint be registered as suit.
3. Issue summons. Summons is accepted by learned counsel appearing for the defendants.
CS(COMM) 718/2024 Page 1 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:10
4. Let the written statement be filed by the defendants within thirty days from today. Along with the written statement, the defendants shall also file affidavit of admission/denial of the plaintiff's documents, without which, the written statement shall not be taken on record.
5. Liberty is given to the plaintiff to file replication within thirty days from the date of receipt of the written statement. Further, along with the replication, if any, filed by the plaintiff, an affidavit of admission/denial of documents of the defendants, be filed by the plaintiff, without which, the replication shall not be taken on record. If any of the parties wish to seek inspection of the documents, the same shall be sought and given within the timelines.
6. List before the Joint Registrar (Judicial) for marking of exhibits, on 24th October, 2024.
7. List before the Court on 22nd October, 2024.
I.A. 37410/20248. The present suit has been filed by the plaintiff seeking permanent injunction restraining the defendants from infringement of trademarks, rendition of accounts, damages, delivery up and from passing off plaintiffs registered and well-known trademark 'KFC', 'KENTUCKY FRIED CHICKEN', the logos , , , CS(COMM) 718/2024 Page 2 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:10 , and (the 'KFC' trademarks).
9. It is submitted that plaintiff is one of the first global fast food franchises to have entered India in 1990 and has acquired tremendous goodwill and reputation amongst the purchasing public and members of trade as a result of worldwide use, sales, marketing and promotional strategies and premium quality of services provided thereunder.
10. It is submitted that the plaintiff has spent a large amount of time and money in marketing and popularizing the KFC Brand. Various famous Indian celebrities such as Allu Arjun, Karan Johar, Yami Gautam, Vir Das, Anil Kapoor, Ajay Devgn, Ratna Pathak Shah, Ranveer Singh, Govinda, Karisma Kapoor, Varun Dhawan, Harbhajan Singh, etc. have featured in the Plaintiff's television and online commercials.
11. It is submitted that in addition to the common law rights that accrue in favour of the plaintiff by virtue of honest and prior adoption, long, continuous, extensive and interrupted use, the plaintiff has also been granted statutory recognition for the KFC trademarks in India. The plaintiff's trademark KFC was first adopted in the year 1991 and has been used continuously and uninterruptedly since then. The plaintiff has registrations for the trademark KENTUCKY FRIED CHICKEN and KFC in India since as early as April 1988 and October 2000 respectively. Details of some of the plaintiff's primary trademark registrations in India, are as follows:
CS(COMM) 718/2024 Page 3 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:10
12. It is submitted that the plaintiff's KFC trademarks also comprise of integral elements such as and the red and CS(COMM) 718/2024 Page 4 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:11 white colour combination. The plaintiff is also recognized by the public for the innovative names of its food products, such as, Zinger burger, Original Fried Chicken, Fiery Grilled Chicken, etc. Further, the plaintiff has also adopted a unique layout for its outlets, designed in the colour combination of red and white. The red and white colour combination has also been adopted by the plaintiff as part of its packaging and take-away containers. Hence, the plaintiff is the legitimate and honest adopter and proprietor of the KFC Brand, which includes the trademark KFC and has an illustrious history, which has resulted in its widespread goodwill and fame.
13. It is submitted that the plaintiff, in August 2022, came across defendant No. 1's trademark applications filed for the marks under no. 4820645 in class 35 and under no. 627560 in Class 43, as the same were advertised in the trademarks journal in June, 2022.
14. The plaintiff also came across trademark registrations in favour of defendant No.1 for the mark ALASKA FRIED CHICKEN under no. 5173108 in class 16 dated 13th October, 2021 and the device mark under applications nos. 5172863 in Class 16, 5173054 and 5172154 in Class 29 and 5173091 in Class 30.
15. It is submitted that the plaintiff also noticed that the defendants were CS(COMM) 718/2024 Page 5 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:11 selling their food products in the packaging/trade dress which imitate the packaging/trade dress used by the plaintiff for its food products. Further, it was observed that the font used by the defendants in their logo ( ) and products is also identical to the font used-by the plaintiff to write KFC ( ) on their product packaging.
16. It is submitted that based on the foregoing, it is apparent that customers are approaching the defendants believing that there is some association between the plaintiff and the defendants owing to the similarity in the competing trademarks. It is further submitted that owing to similarity between the trademarks of the plaintiff and defendants as well in view of identical services/goods provided by the parties, the activities undertaken by the defendants are harming the goodwill and reputation of the plaintiff and its trademarks.
17. This court notes that when the matter was listed on the last date of hearing, learned counsel for the defendants had submitted that they had no intention of infringing upon the mark of the plaintiff.
18. Learned counsel for the defendants has today handed over a document pertaining to the proposed marks, which are alleged to be distinct and not deceptively similar to the plaintiff's trademarks and trade dress.
19. Learned counsel for the plaintiff however, submits that the same is not acceptable to the counsel for the plaintiff as the mark being used by the defendant nos. 1 and 2 is deceptively similar to the mark of the plaintiff.
20. It is submitted that the defendants are infringing the registered KFC trademarks, by using deceptively similar AFC marks, and offering identical goods and services as that of the plaintiff. It is further submitted that the CS(COMM) 718/2024 Page 6 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:11 American Fried Chicken, which is the full form of the mark AFC and also forms part of some of the word marks of the defendants, is conceptually similar to the plaintiff's prior trademark, Kentucky Fried Chicken.
21. It is submitted that it is evident that both the trademarks, AFC and its full form American Fried Chicken, are strikingly similar to the plaintiff's trademarks, KFC and Kentucky Fried Chicken. Further, the font used by the defendants while writing AFC in their Logo and products is also identical to the font used by the plaintiff to write KFC on their product packaging. The defendants are completely aware of the confusing nature of the impugned marks with the plaintiff's KFC marks, and have chosen to adopt and use the same with the sole purpose to ride upon the well-established goodwill and reputation vested in the plaintiff's KFC trademarks.
22. In the above circumstances, the plaintiff has demonstrated a prima facie case for grant of injunction. In case no ex parte ad interim injunction is granted, the plaintiff will suffer an irreparable loss. Further, the balance of convenience also lies in favour of the plaintiff, and against the defendants.
23. Accordingly, till the next date of hearing, defendant nos. 1 and 2, its directors, proprietors, servants, agents and all others in active concert with them, are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in goods and services bearing the marks 'AFC' and the logos and CS(COMM) 718/2024 Page 7 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:11 or any other mark, which is identical or deceptively similar to the plaintiff's 'KFC' trademarks.
24. Issue notice. Notice is accepted by learned counsel appearing of the defendants.
25. Reply be filed, within a period of four weeks. Rejoinder thereto, if any, be filed within two weeks, thereafter.
26. Re-notify before the Court on 22nd October, 2024.
MINI PUSHKARNA, J SEPTEMBER 5, 2024 au CS(COMM) 718/2024 Page 8 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2024 at 00:47:11